The trademark SKIL, belonging to the Chinese company Nanjing Chervon Industry Co,.Ltd., can already operate in Brazil under the protection of local legislation. After the initial application for registration was refused by the Brazilian PTO, the CNV legal team was able to reverse the decision and obtained the grant that allows the use of the word mark exclusively within its commercial segment.
A few months ago, the first application had been denied by the Brazilian PTO on the grounds that there was already registration of the similar trademarks BOX SKILL, SKILL STATION, SKILL LIVE, SKILL LEARNING+, SKILL ALIANÇA INGLESA and SKILL IDIOMAS.
The Brazilian PTO’s explanation was based on item XIX of Art.124 of the Industrial Property Law (nº 9.279/96), which establishes that it is not registrable as a trademark the “reproductions or imitations, in whole or in part, even with an addition, of a mark registered by another party, to distinguish or certify an identical, similar, or alike good or service, likely to cause confusion or association with the other party’s mark”.
However, with a solid technical argument, the lawyers of CNV IP Law Firm convinced the Brazilian PTO that SKIL’s field of action is totally different from the segment of similar trademarks previously registered. It is worth noting that the CNV applied for registration of the SKIL trademark in Class 9 (NCL), for the following specifications: Remote control apparatus; Heat regulating apparatus; Apparatus to check stamping mail; Radiological apparatus for industrial purposes; Cash registers; Galvanic cells; Integrated circuits; Life jackets; Electronic tags for goods; Photocopiers [photographic, electrostatic, thermic]; Voting machines; Hemline markers; Materials for electricity mains [wires, cables]; Mechanisms for coin-operated apparatus; Sunglasses; Lightning arresters; Electronic notice boards; Semiconductors.
Technical arguments that changed Brazilian PTO’s decision
In order to be able to reverse Brazilian PTO’s initial decision, CNV’s legal team thoroughly studied the case, including with the technical analysis of the other trademarks with similar names, and presented its defense of the client based on three main arguments:
- Clear distinction between market segments It has been demonstrated and proven that the products protected by the SKIL trademark belong to a completely different technical and industrial field from that explored by the previously registered trademarks.
- Principle of specialty and absence of risk of confusion The CNV team based the appeal on the correct application of the principle of specialty, which ensures that trademarks can coexist when intended for different purposes, even if there is partial graphic or phonetic similarity between the signs.
- Contextual analysis and administrative jurisprudence With technical mastery of Brazilian PTO’s operation and guidelines, the CNV demonstrated that the signs cited as impediments do not exercise any direct competition with the SKIL trademark, nor do they have the potential to generate real confusion or undue association on the part of the target consumer public.
That is, in practice, the registration of the Skil trademark in class 9 – with the specifications mentioned above – does not violate item XIX of Art. 124 of the Industrial Property Law and no other Brazilian legal provision.
The explanations of the CNV were accepted by the Brazilian PTO, which revoked the refusal and granted trademark registration to SKIL, which now has legal protection in Brazil for 10 years, renewable for the same period successively (Art. 133 of the Industrial Property Law).
“This approach demonstrates not only commitment, but the deep technical-regulatory and strategic knowledge of the CNV team, which acts with excellence in the defense of its clients’ intangible assets, aligning legal know-how, administrative practice and market sensitivity,” said Sonia Carlos Antonio, founder and managing partner of CNV.
Concrete results for SKIL
Unlike some countries, Brazil adopts the first to file principle for trademark registration – in the United States, for example, the first to use principle is applied. As SKIL was the first to register a trademark in Class 9, with the specifications we mentioned earlier, the company obtained favorable results to develop its business in Brazilian territory.
Among them is the exclusivity of use of the trademark in Brazil in its area of operation. This is significant not only in the economic context – considering that this market is expanding in the country and throughout South America – but also in the scope of legal certainty, with the certainty that it is landing in Brazil with due legal protection of the trademark and without violating previous rights.
International registrations in Brazil
The case of SKIL clearly and unequivocally demonstrates the importance of a local legal support highly specialized in international trademark registration applications in Brazil – it is even mandatory to appoint a Brazilian representative to receive notifications in this type of procedure at the Brazilian PTO.
Although the country is a signatory to global agreements, there are some particularities that require in-depth knowledge of Brazil’s administrative jurisprudence. Therefore, CNV IP Law Firm stands out worldwide as a strategic partner of international trademarks that seek to consolidate in Brazilian territory.
With fluent communication and transparency at all stages of the process, CNV provides technical and strategic legal support from preparation for the trademark application to grant and post-registration monitoring.
It was in this way that CNV, specialized in intellectual property with consultancy to international agents, was able to reverse Brazilian PTO’s initial decision on SKIL’s refused trademark application.
A serious, highly technical job, with in-depth knowledge of Brazilian legislation and the safest ways to succeed in protecting international trademarks in Brazil.